Appeal 2007-2358
Reexamination Control No. 90/006,888
properties of the claimed invention. PPG Indus. Inc. v. Guardian Indus.
Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353–54 (Fed. Cir. 1998).
The claim language does not exclude narrower embodiments that meet all
the limitations of the claimed subject matter.
Finally, Dura Line argues that the Examiner erred in refusing to give
the preamble patentable weight. (Br. at 10–12.) In particular, Dura Line
argues that the "for slidably receiving" language is essential to understand
the phrase "low friction placement of the cable" in claims 1 and 9. (Br.
at 10.) While it is true that the Examiner said he gave no weight to the
preamble, that statement was harmless because the Examiner addressed that
limitation. Specifically, the Examiner found that Oestreich's tube "is capable
of slidably receiving the cable while the cable is being inserted into the tube
or innerduct insofar as the inner surface having [sic: has] a small coefficient
of friction." (Final Rejection at 8; Cf. Answer at 9.) Again, the Examiner
reasonably found that the Oestreich protective casing inherently met all the
functional requirements of the claim. Dura Line did not come forward with
evidence to counter the Examiner's findings.
Accordingly, we AFFIRM the rejection of claims 1, 2, and 4 under
35 U.S.C. § 102(b) over Oestreich.
As Dura Line has not offered independent arguments against the
rejection of claims 3, 5, 6, 9, and 10 under 35 U.S.C. § 103(a) over the
combined teachings of Oestreich and Conti, we AFFIRM that rejection
without further discussion.
13
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013